Will The Supreme Court Weigh In On Patent Obviousness?

from the hopefully dept

Back in May of last year, we wrote about the Progress & Freedom Foundation -- an organization we rarely agree with -- submitting an amicus brief in a case saying that the test for patent obviousness needs to change. The brief was for the KSR v. Teleflex lawsuit, which Business Week is now writing about. KSR has asked the Supreme Court to look into the case, after the Appeals Court tossed out a lower court ruling, saying that the only test for obviousness is to find prior art of some sort. There's not much new, but the Business Week article presents a good summary of the situation -- and highlights, specifically, how simply combining two separately existing things shouldn't be patentable. This is one of the big complaints people have with patents like those found in the NTP-RIM case, where it's simply about combining "wireless" and "email." Just because something is wireless or on the internet doesn't mean it deserves new patent protection -- and it's good to see more mainstream articles discussing this issue. The real issue is that many of these patents really try to patent a general solution to a problem -- but if you presented that problem to lots of people with knowledge in the field they'd all come up with a number of solutions, many of which would be similar. Recognizing that a problem can be solved doesn't deserve monopoly protection when lots of people could independently solve the same solution. Why not let the market decide which solution is really the best?

Justa couple points

1) I personally think a lot of this nonsense regarding useless patents is meaningless. The fact remains that less then 3 % of patents are ever litigated. If someone wants to pay $1000 bucks to patent SCUBA gear for a dog (which, oddly enough, has been patented), then thats fine with me, especially because the chances of that patent being enforced are nil.

2) #1 said, I think that should the Supreme Court decide to visit the obviousness issue, they should be careful to limit any changes they make to specific areas of technology (i.e. computer software, business methods, "emerging" technologies etc.). Believe it or not, the current system works pretty well in most engineering and chemical cases (though, of course, there are always outliers).

3) One thing that has been mentioned a lot is that a major problem with the current obviousness standard is that it is "not in tune with the real world" and does not take into account that it may be very obvious to combine two preexisting things, even though their is no documentation suggesting the combination. While this may or may not be the case, one fact that must be taken into consideration is that a major bonus of the patent system is that these combinations, even those which people in this forum may call "obvious," are written down and ultimately transferred to the public.

4) One thing no one seems to have pointed out in these forums (or any of the linked news stories) is that under the current patent system, the specification must provide sufficient written description to enable one of ordinary skill in the art to make and use the claimed invention. While the courts do not currently require the "entire" scope of the claims to be expressly enabled by the specification (to do so would require the applicant to enumerate every possible way they think their invention could be used, which would be incredibly expensive and generally wasteful), but some line is drawn with respect to the scope of the claims. Indeed, while limitations in the specification are not read into the claims, the claims are read in light of the specification. If the specification does not sufficiently describe the subject matter recited in a particular claim, that claim may be rejected under 35 U.S.C. 112.

5) In view of #5, I think a lot of headway against "over" or "excessive" patenting could be made if the enablement and written description requirements under 35 U.S.C. 112 were made tougher. Ultimately this may not reduce the number of patents issued, but its likely that such an action would substantially limit their scope.

Re: Justa couple points

I agree that it's worth pointing out the "tradeoff" that patents are made public, thus (in theory) granting a public benefit. However, as plenty of people have pointed out, if the patent is obvious, then this benefit disappears completely. Others could easily have figured it out on their own.

Re: Justa couple points

What if the patent system does change within the next few years - do those who had been affected by the previous system (those who've made huge payouts to patent holders/trolls who are not using or ever planed to use their patented ideas) get their lawsuit money back? ...highly unlikely. but it is something to give thought to.

Re: Justa couple points

This is a valid point and likely one that will be taken into consideration by the court. In economic speak, the issue you are referring to is called "reliance interest." Reliance interest is essentially the value of assets placed in reliance on a current system, in this case, the current patent law. It would be extremely costly (not to mention wasteful) to change the current patent system in such a manner as to dispatch the patent rights of millions of patentees.

Indeed, an argument could be made that should the patent system be changed in this significant a manner, it would give rise to a suit against the federal government for an unlawful "taking," of property, in violation of the Constitution of the United States. While some people on this site may be anti-patent etc., I highly doubt any of them are anti personal property. Further, while it is well known fact that the founding fathers were concerned about the implications of a patent system, there is also little doubt that one aspect of the 5th amendment to the constitution is to protect the personal property of the denizens of the United States.

Re: Justa couple points

So forget the system is broken and being used to do the opposite of what it was conceived for. Glad people like you are around, makes the RIAA and MPAA happy to have friends. The system can be changed from this point forward, do you understand progressive change? Revisiting patents at this point is not going to be a problem for anyone other than those who do not have actual inventions. Also most people do not have a problem with patents on real ideas, just the stupid "look I put a hot dog on bread, I think I will patent this" nonsense.

Re: Justa couple points

Patentman said:

Indeed, an argument could be made that should the patent system be changed in this significant a manner, it would give rise to a suit against the federal government for an unlawful "taking," of property, in violation of the Constitution of the United States.

While an interesting point, I think it would fail quickly. The USSC has clearly stated that copyright infringement is not theft, as IP is not actually 'property' in a legal sense. Patent infringement would presumably fall under a similar heading.

Now, maybe you could sue the government for allowing and aiding in patent infringement. I could see things both for and against such a suit, and so have no idea how such a thing would fall.

Don't mess with our Constitution

Hey, the right afforded by US patent to a patentee "to exclude others from making, selling etc." is enshrined in the US Constitution.Any attempt to take it away is a clear violation of our Constitution.

Re: Don't mess with our Constitution

Hey, the right afforded by US patent to a patentee "to exclude others from making, selling etc." is enshrined in the US Constitution.

It is? Can you point out where?

The actual clause is:

"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"

That's a little different than what you're saying. And, no one is trying to take away the rights outlined in the Constitution, but to make sure that the patent system does, indeed, do what the Constitution says: promote the progress of science and useful arts. The complaint we have is that the current system is doing the opposite.

Re: Don't mess with our Constitution

"securing for limited Times to ... Inventors the exclusive Right to their respective ... Discoveries" Check the dictionary for what "exclusive right" means...To me and to pretty much everybody else except maybe you, it means "the right to exclude others"This "right to exclude" is written on the actual official paper patent grant you get from PTO, but you obviously don't have one.

Re: Don't mess with our Constitution

Hmm, but the Constitution does NOT say what you said it did -- which was my point. It implies it, but as part of a larger issue, which you took out of context. Either way, it doesn't change what we're saying -- if patents are not promoting progress of arts and science then they don't deserve such rights. So, your very premise, that somehow changing the patent system is unconstitutional is rubbish.